IP: Roadblocks, detours and dead ends on the top-level domain journey

For some applicants for new generic Top-Level Domains (gTLDs), the journey from application to delegation may not be quite as easy as a Sunday drive, but it likely will be fairly uneventful. The Internet Corporation for Assigned Names and Numbers (ICANN) expects an estimated 90 percent of applications will need to answer at least one clarifying question from the Initial Review committees, most of which likely will focus on financial consideration, including letters of credit, security policy and independent security assessments. Pending satisfactory answers to these questions, however, “straightforward” applications (those not subject to extended evaluation, formal objection or string contention proceedings) would proceed to the delegation phase without any significant detours or delays along the way. Many other applicants, including the largest players in the process, however, may meet multiple roadblocks, detours and delays—some anticipated and others perhaps unexpected—on the road to delegation. And at least 25 percent (and probably significantly more) will arrive at a dead end from which no alternate route exists.

Dead Ends: No Outlets and No U-turns

Only one applicant can succeed in obtaining any one gTLD, and all other applications in the contention set for that domain—both identical strings and those found sufficiently similar—will be at a dead end. For example, of the 13 applications for .APP, one applicant (if any) can obtain the domain, 12 will not. Given that nearly 40 percent of the applications (751) are vying for 230 identical domains (plus those similar strings also in contention), at least 520 applications (more than 25 percent of the total applications) ultimately will fail. In addition, applicants for community-based TLDs in contention with other applications may elect community-priority evaluations. If the application meets the criteria for that evaluation, only other contending community-based applications will be included. Any standard application in contention automatically reaches a dead end.

Formal objections can also send an application down a dead end. Parties with standing may submit formal objections on four grounds—string confusion, legal rights, limited public interest, and community objection. String confusion objections are limited to claims of confusing similarity between either an existing TLD or another applied-for gTLD string, and are not available to nonapplicants. While a successful string confusion objection by an existing TLD operator terminates the application, a successful objection by another applicant causes both applications to be referred to string contention resolution.

Legal rights objections allow any “rights holder” to assert that a gTLD string infringes rights “that are recognized or enforceable under generally accepted and internationally recognized principles of law.” While no legal rights objections exist for generic terms, parties may object if “the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark.” Legal rights objections, filed with The Arbitration and Mediation Center of the World Intellectual Property Organization, can result in a quick remedy for objectors—and a quick trip to a dead end for applicants.

Limited public interest objections, available to both applicants and nonapplicants, assert that the applied-for string is contrary to generally accepted legal norms of morality and public order recognized under international law. The objection is subject to a “quick look” review to filter out frivolous or abusive objections. Finally, community objections are available only to established institutions associated with clearly defined communities, and assert that substantial opposition exists to a gTLD application from a significant percentage of the community. This objection is not limited to community-based applications. For example, of the eight applications for .MUSIC, only two are designated as community-based. As long as an objector meets the standing requirement, however, it could file an objection against all eight of the applications, the six standard applications, as well as the two community-based applications.

While lodging an objection involves a significant commitment of resources and should not be undertaken lightly, the process can secure the denial or withdrawal of an application. Applicants have three options: reach a settlement that results in withdrawal of either the objection or the application, withdraw the application or file a response and enter the dispute resolution process. Having invested a minimum of $185,000 in the gTLD application, applicants likely will be reticent to withdraw their applications, yet the additional time and money required for responding to objections can be significant, particularly for companies with multiple applications or with applications that draw objections from more than one party.

Other detours and delays

As we discussed in Wrong turns and other directional changes in the road to new gTLDs, applicants that submit a request for a change to their applications will experience a delay of at least 30 days during which ICANN holds all amended applications for public comments. ICANN also reserves the right to resubmit materially amended applications for initial evaluation, essentially sending the application back to the beginning of the process.

While the public comment period officially closed on Sept. 26, comments continue to impact the gTLD application process. Comments directed at the evaluation panels and lodged before the close of the official comment period are considered during the initial evaluation, and comments made on objection grounds are available for viewing by the independent objector and dispute resolution service providers. Comments made after Sept. 26 remain available for public viewing, although they are not required to be considered by the evaluation panels.

The Governmental Advisory Committee (GAC) also will consider comments in determining whether to issue any early warnings or formal advice. GAC formal advice creates a presumption that the ICANN board should block a particular application, and likely signals the end of the road for such applications. GAC formal advice is not scheduled to be released until April 2013, but GAC Early Warnings will be issued later this month. Applicants targeted by the GAC early warnings may opt to withdraw from the gTLD application process with an 80 percent refund of the application fee.